Opinion — American Fruit Growers, Inc. v. Brogdex Co.

“pigs reeeevaneieensiterthinaee

uke eSiers to.

aby nited States, Cir- |

“(= -euit Court of Appeals

for the Third Circuit. .

American Fruit Growers, Ine., Peti- 10

" tioner,

ee,” .

Brogdex Company.

~ ; 2 se ie :

pans, 1931, ]

a ae

Mr. Justice McReyNoups deliv ered the opinion | of the Court.

‘The Brogdex Company, present owner of United ' States Letters

Patent No. 1,529,461, relating to ‘‘certain new and useful improve- .

ments in the art preparing fresh fruit for market’’, applied for

August’ 13, 192: d issued to Brogden and Trowbridge March 10,

_ 1925; presented{its bill of complaint to the District Court for Dela-

ware April 15, 1926, wherein it charged that. the defendant (peti-

tioner here), the American Fruit Growers, Ine., had infringed, and

‘asked an injunction, accounting, damages, ae It relied upon.

. Claims Nos. 1, 2; 3, 4, 5,.6, 7, 9, 14, 15, 16, 17 and 18 which’ de-

A scribe the process of treatment, also Nos. bes 24, 25: and 26, which

concern the product.

‘Both courts below held all ‘of tae claims valid and inbtawed:

* and directed that petitioner .be enjoined,from using any: process

‘therein specified, also. from. manufacturing,: selling, or’ using :

‘‘treated fruit embodying and containing the invention esse satis

in said letters patent and secured by any of said [product] claims.’

‘Of the process claims, the following is .characteristie—. .

- ‘£3... In the preparation of fresh fruit for market, the’ pro-

.eess. which’ comprises subjecting fruit to the action of an

aqueous solution. of borax, the fluidity, strength and tempera-

“ture of. the treating: solution, and the duration of the treat- -.

ment, being such that exposed rind or skin tissues of the fruit

are effectively impregnated with borax and rendered esist-"

ant to blue mold decay, while at the same time the -fruit is’

not scalded nor is its freshness. or ‘edibility otherwise substan:

tially impaired.’ + ” ale -

2 ‘American Fruit Growers, Inc. vs. Brogdex Company:

. The following is typical of the product claims—

> «96. Fresh: citrus fruit of which the rind or skin carries

borax in amount that is’ very small but sufficient to render

the fruit resistant to blue mold decay.” ° .

“The claim of a patent must: always be explained by and read

in connection with the specification? ’ Carnegie Steel Co. Vv. Cam-

bria Iron ©o., 185 U. 8. 403, 432.

The specification in respect of the patent states—

**This invention relates to art of preparing fresh fruit for

; market ; and in particular it relates to processes for the treat-

ment of citrus and othet fruits in such manner .that the de-

velopment of molds and the like upon the.fruit, and especially

the development of blue mold and infection by blue mold

+ spores, is prevented or arrested either wholly or to such large

extent as greatly to prolong the marketable life of the fruit

beyond what has been possible heretofore; the éomplete treat-

ment most desirubly also including a step of providing the |

° fruit with @ very thin film-like coating of protective material ~

comprising a waxy substance such as paraffin; all as will more

fully hereinafter appear. —

‘The greatest present utility the invention is in the

treatment of citrus fruits such as o , grapefruit, lemons,

. tangerines, etc. ; also apples atid other fruits that are attacked

by blue mold or the like. The invention is broad, however,

’ and the term fruit as ‘herein employed is to be understood as

not necessarily restricted to fruit in the sense in which the

word is usually employed, but is to be understood y

as including not only fruit proper but also vee, uh as

tomatoes or the like, that can ®e treated to, vantage in ac-

cordance with. the principles of the invention to be _herein-

after set forth.

**For the sake of a.concrete wine whereby the pridéiples

; of the invention may be illustrated and explained, reference

.* * will be made hereinafter more particularly to the treatment

of citrts fruit, especially oranges and lemons, which are especi-

ally subject to attack and destruction by blue mold. It is a well-

known fact that a large part of the losses from decay in‘the

marketing of various fruits, such as citrus fruits and apples,

is attributable directly t6 the action of blue mold. The prob-

‘itil Fruit Growers, Inc. vs. Brogdex Company. 3

lem of how to suppress.or control blue mold development on

fruits has been the subject of extensive and careful investi-

gation, but admittedly no thoroughly satisfactory solution of

the problem has heretofore been offered. In spite-of elaborate

precautions taken in the handling ahd transportation of fruits

to market, it is not uncommon for ‘shipments of oranges and

the like to arrive at marketing points showing in some ¢ases

as much as 30 to 40 per cent decay directly attributable to

blue mold. The various investigations of the subject have

’ shown that while blue mold does not ordinarily attack per-

fectly sound fruit that’is free from bruises; cuts, thorn-pricks

r punctures, the slightest surface cut or scratch affords a

as of attack by providing lodgment for blue mold spores

which develop with great rapidity and soon bring about com-

‘plete destruction of the infected fruit. .

“‘The present applicants have discovered that by proper

treatment of the fruit in the packing house it is possible to

greatly reduce, and often to absolutely prevent, the growth

or development of blue mold on fruit*for long periods of time, .

and thus to materially lessen or even eliminate the heretofore.

unavoidable losses from decay. Moreover, it is possible to

achieve these results without upsetting or greatly changing

present practice so far as concerns the’ mechanical handling

of fruit in packing houses: of the modern type. Thorough

practieal tests of the novel processes have demonstrated con-

clusively that, by proceeding in accordance with the inven-

-tion, blue mold development can be arrested, and fruit can be

rendered immune to attack by blue mold spores, in a simple

and effective manner without affecting the freshness and flavor —

of the fruit, the marketable life of the fruit being thus pro-

longed far beyond that of untreated fruit. In view, of the

well known persistent activity of blue mold spores even under

conditions fatal to the parent mbdld; the~impo of this

achievement is obvious. In general, the process o ‘the inven-

tion involves applying to the fruit a mold-inhibiting reagent

comprising the boric acid radical, said compound being’ niost

desirably alkaline in reaction and being employed in con-

centration effective to render the surface of the fruit un-

wana 2 as @ medium for blue mold dbipaiens. Ordinary

4.

American. Fruit Growers, Ine. vs. Brogdex Company.

borax (Na,B,0,+10H,0) has been found after extensive

investigation, to be especially potent in its retarding and in-

hibiting action in this connection, and this substance is con-

sidered at present-to be the most desirable to employ in prac-

ticing the invention. A water solution of borax is alkaline in

reaction, but is without corrosive or other deteriorating action

upon fruit to which it is applied. Borie acid is not so’ effec-

tive as a n6ld- retarder as is borax; but compounds of boron,

whether avid or alkaline, appear to have a specific inhibiting

action upon blue mold; and hence it is not. desired to limit the

invention, so far as concerns compounds of boron, to the em-

ployment of an alkaline treating solution,

**The method of applying’the treating solution to the fruit

may Assume various specifically different forms, the precise

details of procedure ‘being not essential to the invention in its

broader aspects. However, where it is desirable, as may often

be the case, to carry out the process: without ‘changing prior

practice any Poa Ge is strictly necessary, the application

of the mold-rgtarding agent may be effected as a part of. or in

conjunction with the usual washing operation to which the ©

fruit is initially subjected in its handling according to modern

packing house methods, especially as most of the mold-retard-

ing agents herein contemplated also have excellent cleansing

or detergent properties. Accordingly, in the practice of the

invention, the mold-retarding agent, borax in a specific in-

. Stance, may be added in proper mold-inhibiting quantity

directly to the wash. water in the usual soaking tank into

‘ which the fruit is dumped —_ the field boxes as it comes

from-the groves. ’

‘From. this point on, the handling of the fruit.in further

preparation for boxing and shipment may or may not involve

additional preservative treatment in accordance with the prin-

ciples of the invention. This depends upon whether or not

the fruit is to receive an application of protective coating ma-

terial for the purpose of preventing or reducing shrinkage

ard withering and‘ of ensuring conservation of the original

freshness and flavor of the fruit for prolonged periods of time.

Generally this further. treatment is highly desirable, and if

the benefits of the invention are to be realized to the fullest

extent, this further treatment should be carried out. It con-

.

American Fruit Growers; Inc. vs. Sieetie Company. 5.

sists in applying to the fruit a normally solid “protective ‘ma-

terial, especially paraffin or like waxy material, in such condi-—

’ tion that it-can be spread all-over the surface*of the fruit: to

producé an extremely thin protective film which is not notice-

able except by the expert eye and does not interfere with the

so-called breathing or transpiration of the fruit to an unde-

sirable extent, but which is effective to conserve the original

plumpness and fresliness of the fruit’ as above stated.

‘‘In the foregoing disclosure of the principles of the in-

vention, reference has been made more particularly to blue

mold as a source or cause of decay. Such reference to blue

mold is to be taken, not. as restrictive, but as generic and as

intended, both in the spécification and in the claims, to’ cover

not only blue mold but all kindred rot and decay organisms

and diseases generally amenable to treatment in accordance

with the invention, to which fruit is or may be susceptible and

_by which it may be:damaged under ‘the conditions prevailing .

in packing and marketing. . . .”’ :

Petitioner admits ownership of plants which pack and sell’

citrus fruits and that when preparing these for market it caused

‘them to be dipped in a borax solution in order to prevent or re-,

tard decay incident to growth of blue mold. Under the treatment

applied.the raw fruit is immersed in a cold or warm solution of

borax or borie acid, permitted to remain until thoroughly wet,

then rinsed, dryed and brushed. Infringement. is admitted, if

the patent is valid.

In defense petitioner maintains that the product claims of the

patent fail to describe an article of manufacture. within the mean- -

ing of the statute. Also that the process claims are invalid for

various reasons, among them anticipation by United States Letters

Patent No. 683,899, issued October 8, 1901, upon —— of

Simeon Bishop.

Is an orange; the rind. of which has become impregnated’ with

borax, through ifmersion . in a solution and thereby rendered re-

sistant to blue mold decay, a “manufacture”, or manufactured -

article, within the meaning of Sec. 31, Title 35, U. S. Code?

“ Any’ person who has‘invented or discovered any new and

useful art, machine, manufacture, or composition of matter,

or any new and useful improvements thereof, not known or

used by others in this country, before his invention or dis-

.

6 American Fruit Growers, Inc. vs. Brogdex Company.

. covery thereof, and not patented .. . may . . . ob-

tain a patent therefor.’’ epee. |

Answering affirmatively the Circuit Court of Aneile said : ‘*The

product claims define an article of manufacture, since the. fruit

> is the result of a process which is defined and described and not a

natural product. The product is a combination of the natural

‘fruit and a boric compound carried by the rind or skin in an

amount sufficient to render the fruit resistant to décay. The eom-

plete article is not found in nature and is thus an article of manu-

. facture. ‘ Riter-Conley Mfg. Co. v. Aitken, et al., 203 Fed. 609.”’

This position; we think, is not tenable..

‘*Manufacture’’, as well’ defined by the Century onary

‘‘the production of articles for use from raw or prepared materials

‘| by giving to these materials new forms, qualities, properties, or

’ combinations, whether by hand-labor or by machinery.’’ Also

‘‘anything made for use from raw or prepared materials.’’

Addition of borax to the rind of natural fruit does not produce

from the raw material an article for use which possesses a new or

distinctive form, “quality, or property. The added substance only

protects the natural article against deterioration by inhibiting --

‘development \of -extraneous spores upon the rind. There is no

change in the name, appearance, or general character of the fruit:

_It remains a fresh orange fit only for = same beneficial uses as

theretofore.

In Hartranft > Wiegmann, 121 U. 8, 609, 613, 615, this Coutt

-eonsidered the meaning of the words ‘‘manufactures of shells”

and held that ‘‘cleaning’ off the outer layer of the shell by acid,

and then grinding off. the second layer by an emery wheel, so as to

- expose the brilliant inner layer,’’ did not convert it into a manu-

facture. ‘‘The shells in question here were not manufactured, and -

- were not manufactures of shells, within the sense of the statute

imposing a duty of 35 per centum upon such manufactures, but

were shells not manufactured, and fell under that designation in

the free list. They were still shells’ ‘They had- not been manu-

factured into a new and different article, having a distinctive name,

character or use from that of a shell. The application of labor to

an article; either by hand or by. mechanism, does not make the

article necessarily a manufactured article, within the meaning of

‘that term as used in the tariff laws. Washing and scouring wool

does not make the resulting wool a manufacture of wool. Clean-

American Fruit Growers, Inc. vs. Brogdex Company. 7.

ing and ginning cotton does not rhake the renting cotton a manu-

_ facture of cotton

And in Anheuser-Busch Assn. Vv. United ‘States, 207 U. S. 556,

562, where it was claimed that corks for bottles which had under-

gone. special treatment after importation thereby. became articles

'.’ manufactured in the United States, this Court said: ‘‘Manufacture

implies a change, but every. change is not manufacture, and yet

every change in an article is the result of treatment, Jabor and

manipulation. But something more- is necessary, as set forth and

illustrated in Hartranft v. Wiegmann, 121 U.S. 609. There must

be transformation ; a new and different article must emerge - ‘having

a distinctive name, character or use:’ ’’

If it be assumed that the process claims under consideration

cover an invention, we think this lacked ‘novelty when application

was made for the) patent, August 13, 1923. The underlying con-

ception had eps adequately revealed in Bishop’s Patent of 1901.

He claimed

‘*1. The method of treating articles of food to preserve and

enhance their value, which consists in washing them with a

solution of boracic acid and then applyiné a — of gelatin,

substantially as described.

**2. The method of treating articles of food to ‘presetve

and enhance their, value, which consists in washing them with .

a solution of. boracie acid and then applying a coating of gela- .

tin, and finally wrapping the article in tissue paper which has

been impregnated with a solution of boracie acid, substan-

tjally as specified.’’

_Ankd in the specification he affirmed—

—. “This invention aims to prolong the period of usefulness

of fruit,, vegetables, eggs, and the like as articles of food and:

‘prevent their usual, rapid decay and deterioration, thereby

aa the grower, the-shipper, the merchant, and the con-

8

umer ;

“‘The invention consists in subjecting the article of food

to an antiseptic bath to purify, cleanse, and kill all germs,

then treating it to a coat of air-excluding. material. This pro-

cess not only preserves the articles of food, but enhances its

-value. :

_ “The application of boracic acid is advantageous in that it

prevents decay and adds to the appearance of the article and

~

\\

8 American Fruit Growers, Inc. Vs. | Brogdez Company. i

is perfectly harmless to the human. system. The gelatin, be-

‘sides excluding the air, also adds to the appearance of the

ecient ear ; :

That boraci¢ (boric) acid—a weak scid—and borax, with an al-

kaline reaction, inhibit the rapid development of blue mold’ has

long been known. Both are compounds of boron and contain the

‘boric acid radical’’, Their antiseptic, quality is due to the pres-

ence of that element. ,For present purposes, the two must be re- —

. garded as equivalents and the mere. substitution of one for the —

other would not involve invention or avoid: infringement. Walker

on Patents, 6th Ed., See. 4265 y

Read together the. claims and specification of the Bishop’ patent

show that he intended it should have wide application and cover

treatment of citrus, as well, as other, fruits. He distinctly states:

‘the application of boracie acid prevents the usual rapid decay, and

upon this basic fact respondent endéavors to support the patent in

suit:

True, Bishop proposed as a secondary step the application of

gelatine which he averred would exclude the air and enhance the

appearance of the article. But Brogden and Trowbridge also said:

in their specification that “‘if the benefits.of the invention are to

‘be realized to the fullest extent,’’ the fruit after .being soaked

should receive an application of protective coating’ material,.such

as paraffin, or like waxy material. If the claims of the patent in

suit are valid, one operating under the Rrocess described by Bishop

would inf ringe—and considering the circumstances, here disclosed,

‘that is enough to’ show invalidity. of the dater patent,. Knapp v.

‘ Morss, 150 U. S. 221, 228. It latks novelty. The substance of its

disclosures had ‘been revealed by Bishop _twenty years earlier.

Sewall v. Jones, 91 U. 8. 171, 182, et seq.

‘Biases.

A true copy.

Test

‘Clerk, Supreme Court, U. 8.

POSES op ytarQ tek se te aie ie ct tere SL a ee th th ee ee ee A re El

WN RII IT